WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AGFA-GEVAERT N.V. v. shenxingyu
Case No. D2019-1496
1. The Parties
The Complainant is AGFA-GEVAERT N.V., Belgium, represented by Novagraaf Belgium NV/SA, Belgium.
The Respondent is shenxingyu, China.
2. The Domain Name and Registrar
The disputed domain name <agfa-medical.com> is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 26, 2019. On June 27, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 28, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 28, 2019 providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint in English on July 1, 2019.
On June 28, 2019, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding on July 1, 2019. The Respondent did not comment on the language of the proceeding.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent in English and Chinese of the Complaint, and the proceedings commenced on July 4, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 24, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 26, 2019.
The Center appointed Francine Tan as the sole panelist in this matter on July 31, 2019. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is incorporated in Belgium and is a developer of software for use in the medical sector including in relation to medical imaging devices.
The Complainant owns trade mark registrations for the word “agfa”. These include the European Union (“EU”) trade mark registration Nos. 008820979 (registered since July 5, 2010) and 003353463 (registered since January 24, 2005) for AGFA, and EU trade mark registration No. 016044059 for AGFA HEALTHCARE (registered since March 22, 2017).
The Complainant registered its domain name <agfahealthcare.com> on January 24, 2002.
The disputed domain name was registered on November 11, 2018 and does not resolve to any active website.
5. Parties’ Contentions
The disputed domain name is identical or confusingly similar to the Complainant’s AGFA trade mark. The Complainant stated that “[b]y using AGFA in the domain name, the Respondent creates confusion as consumers may believe that this domain name refers to the Complainant”.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. To the best of the Complainant’s knowledge, the Respondent has not been commonly known by the name Agfa or Agfahealth. The disputed domain name is not in use. Further, the Complainant has not licensed or authorized the Respondent to use the AGFA trade mark or any domain name incorporating the AGFA trade mark.
The disputed domain name was registered and is being used in bad faith. The AGFA mark is famous and predates the disputed domain name. The AGFA mark is so famous that the Respondent could not ignore the pre-existence of the Complainant’s trade mark rights therein. The Respondent must have been fully aware of it when selecting the disputed domain name. The bad faith is reflected in the second part of the disputed domain name, i.e. the descriptive word “medical” which refers to the Complainant’s activities.
An Internet search using the Google search engine immediately shows the Complainant’s AGFA mark. The Respondent has registered the disputed domain name to give the impression that it is affiliated with the Complainant or is endorsed by it.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Preliminary Issue: Language of the Proceeding
The Registration Agreement in this case is in Chinese but the Complaint was filed in English. The Complainant requested that English be adopted as the language of the proceeding for these reasons:
a) the Complainant is not conversant in Chinese;
b) English is commonly used in international communications;
c) the disputed domain name is composed of Latin characters and the English word “medical”, which shows that the Respondent knows English; and
d) should the Complainant have to furnish Chinese translations of the complaint and evidence, a substantial financial burden would be imposed.
The Respondent did not respond to the issue of the language of the proceeding.
Paragraph 11(a) of the Rules provides that “[u]nless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.
Paragraph 10(c) of the Rules provides that “[t]he Panel shall ensure that the administrative proceeding takes place with due expedition”.
The Panel is persuaded, that the Respondent appears to be familiar with the English language since the disputed domain name comprises Latin characters and the word “medical”. This could have been rebutted by the Respondent, but it failed to.
For the Complainant to have to prepare Chinese translations would result in a delay and add significantly to the costs of this administrative proceeding. Taking into account paragraph10 (c) of the Rules and the Respondent’s failure to respond, the Panel finds it appropriate to accept English as the language of the proceeding.
6.2 Substantive Issues
A. Identical or Confusingly Similar
The disputed domain name comprises the trade mark AGFA and the descriptive element “-medical”.
The Complainant has established it has trade mark rights in AGFA. The trade mark is identical in the disputed domain name. The Panel finds that the disputed domain name is confusingly similar to the AGFA trade mark as the inclusion of the descriptive word “medical” and a hyphen does not serve to remove the confusing similarity with the AGFA trade mark. This finding is consistent with what is reflected in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“the WIPO Overview 3.0”).
The Panel therefore finds that the first element of paragraph 4(a) of the Policy has been satisfied.
B. Rights or Legitimate Interests
The Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has trade mark rights in AGFA which predate the registration of the disputed domain name by many years, and no licence or authorization has been extended by the Complainant to the Respondent for the use of the “agfa” word as a trade mark or in a domain name. There is also no evidence that the Respondent is commonly known by the disputed domain name or other name containing the word “agfa”.
As the Respondent failed to rebut the Complainant’s assertions, the Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain name.
The second element of paragraph 4(a) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
Whilst the Complainant has asserted that its AGFA mark is well known, no evidence was put forward to substantiate its claim. Notwithstanding, the Panel finds that the Complainant has sufficiently met its burden of proving that the disputed domain name was registered and is being used in bad faith. The fact that the disputed domain name consists of a combination of the Complainant’s AGFA mark and the descriptive word “-medical” reflects a familiarity on the Respondent’s part with the Complainant and/or its trade mark, and the industry in which the latter operates. This reflects opportunistic bad faith by the Respondent.
Although the disputed domain name does not resolve to any active website, that does not prevent a finding of bad faith use and registration. Section 3.3 of the WIPO Overview 3.0 states that factors that can be considered in applying the “passive holding doctrine” include, inter alia:
(i) the degree of distinctiveness or reputation of the complainant’s mark,
(ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, and
(iv) the implausibility of any good faith use to which the domain name may be put.
The AGFA trade mark possesses distinctiveness, being an invented word without any meaning. The mark also has a specific reputation in relation to the medical sector. The Respondent did not file any response or evidence, for instance, that it has a business that relates to the medical field. As determined hereinbefore, there is no evidence of rights or legitimate interests on the Respondent’s part in the disputed domain name, and there is no evidence that there could be good faith use of the disputed domain name.
The Panel therefore concludes that the disputed domain name has been registered and used in bad faith.
The third element of paragraph 4(a) of the Policy has been satisfied.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <agfa-medical.com> be transferred to the Complainant.
Date: August 1, 2019